Introduction:
This case pertains to an appeal filed by Annikki GMBH against the rejection of their Indian Patent Application No. 467/CHENP/2012 titled “Process for the Production of Carbohydrate Cleavage Products from a Lignocellulosic Material” by the Assistant Controller of Patents and Designs. The High Court of Madras adjudicated the matter under Section 117-A of the Patents Act, 1970.
Factual Background and Procedural History:
Following the filing of the patent application, the Patent Office issued a First Examination Report (FER) in 2017, citing prior art documents D1 to D6 and raising objections related to novelty and inventive step. Annikki GMBH responded with amended claims and written submissions. Despite a hearing in July 2018 and further representations, the application was rejected on 10.12.2019, leading to the current appeal.
Appellant’s Contentions:
Annikki argued that the claimed invention presents a non-fermentative process for producing xylitol, which distinguishes it from the cited prior art. The counsel highlighted specific technical advantages such as selective lignin degradation, low energy use, and absence of fermentation. The appellant contended that prior art D5, which the Controller heavily relied upon, involves fermentation, contrary to the conclusion drawn. The appellant also argued that objections under Section 3(d) were inapplicable as the process was not merely a known process and that the objections raised in the final decision were not previously communicated.
Respondent’s Contentions:
The Controller maintained that the invention lacked inventive step and fell within the scope of Section 3(d), asserting that the combination of processes from prior arts D1-D5 rendered the invention obvious. The Controller also concluded that the invention did not result in enhanced efficacy or a new product or reactant.
Judicial Analysis and Reasoning:
The Court critically analyzed the findings of the Controller, especially the application of Section 3(d). It held that combining two or more known processes does not amount to a “known process” under Section 3(d). Furthermore, it found that the conclusion regarding D5 being a non-fermentative process was erroneous, as D5 clearly describes fermentation. The Court also emphasized that conclusions based on general knowledge must be substantiated by source material. It found the treatment of prior art D2 and the overall reasoning as flawed and lacking evidentiary support.
Final Decision:
The High Court set aside the impugned order and remanded the matter for reconsideration by a different officer, requiring a fresh, reasoned decision to be made within four months. The Court expressly refrained from commenting on the merits of the patent application.
Case Title: Annikki GMBH vs. Controller of Patents and Designs
Date of Order: 24 April 2025
Case No.: (T)CMA(PT) No.70 of 2023 (OA/19/2020/PT/CHN)
Neutral Citation: Not provided
Court: High Court of Judicature at Madras
Judge: Hon’ble Mr. Justice Senthilkumar Ramamoorthy
